IP Litigation Update

A copy of this IP Litigation Update can be found HERE.

The USPTO has centralized IPR institution decisions under the Director, imposing stricter limits on parallel challenges and requiring stipulations that constrain litigation strategy. These changes make IPRs riskier and less predictable. However, ex parte reexamination remains a cost-effective, flexible, and less adversarial alternative. A well‑timed reexamination petition filed with clear prior art and claim mapping can provide meaningful leverage without the procedural hurdles now attached to IPRs.

USPTO’s Change in IPR Institution. As of October 2025, the USPTO Director personally decides whether to institute IPRs, replacing the prior PTAB panel system. Proposed rules require petitioners to stipulate not to pursue invalidity challenges in other venues and limit petitions where claims were previously upheld in district court. Because institution decisions are discretionary and policy-driven, these changes increase uncertainty.

Reexamination Is the Better Route. Ex parte reexamination is significantly cheaper than IPR and does not involve full trial procedures. reexamination is not subject to the Director’s heightened discretionary control. Reexamination rests on prior art patents and printed publications. Petitioners avoid the broad estoppel effects that follow failed IPRs. Reexamination is viewed as a technical correction mechanism rather than an adversarial attack, which can be advantageous in settlement or licensing discussions.

Timing and Content. It is best to file early in litigation to influence claim construction and settlement leverage. But, reexams can also be filed post‑litigation to undermine patent strength without the cost of appeal. A petition for reexam must identify patents or printed publications not previously considered. Detailed claim mapping must show how each cited reference anticipates or renders obvious the challenged claims. The petition must demonstrate that the cited art raises a credible question about validity.

USPTO practice. Patent examiners review petitions for reexamination, not the PTAB. Decisions to grant reexamination are typically faster (often within 3–6 months). Once granted, the process is examiner‑driven, with opportunities for claim amendment and narrowing.

Takeaway. For companies seeking efficient, lower‑risk patent challenges, reexamination offers a more predictable and cost‑effective path than IPRs. Reexamination petitions can deliver meaningful leverage without the procedural and estoppel risks of IPR.